Supplemental Exams for All Technologies: Emerging Powerful Tool for Patent Owners

Over the last few decades, patent owners have been subject to an unenforceability plague known as inequitable conduct. See Therasense Inc. v. Becton Dickinson & Co., 649 F.3d. 1276 (Fed. Cir. 2011) (en banc). Another very similar unenforceability plague is the doctrine of unclean hands. See Gilead Sciences Inc. v. Merck & Co. Inc., 888 F.3d 1231 (Fed. Cir. 2018).

Decades ago, the Federal Circuit, per Judge Rich in Rohm & Haas v. Dawson Chemical Co., 722 F.2d 1556 (Fed. Cir. 1983), raised the possibility that inequitable conduct could be purged. According to Rohm & Haas, a purge can be achieved (though it wasn’t in that case) as follows:

To cure an intentional misrepresentation, the applicant must:

1. “expressly advise the PTO of [the misrepresentation’s] existence, stating specifically where it resides.”
2. “It does not suffice” to merely supply the examiner “with accurate facts without calling his attention to the untrue or misleading assertions sought to be overcome, leaving him to formulate his own conclusions.”
3. advise the PTO “what the actual facts are, the applicant making it clear that further examination in light thereof may be required.”
4. “establish patentability of the claimed subject matter” “on the new and factually accurate record.”

SE came into effect in 2012. SE permits patent owners to submit information to the USPTO after patent issuance. Under 35 U.S.C. §257, patent owners may file a Request for SE and have a determination within three months as to whether the information presented raises a substantial new question of patentability and warrants re-examination. By statute, anything considered by the USPTO during the SE and in the ensuing reexamination, if ordered, is barred as the basis for a later finding of inequitable conduct.

However, there are limitations and potential downsides. An SE request is not available if the items of information were already raised as an inequitable conduct allegation in a patent litigation or in a paragraph IV notice letter. Moreover, any cleansing effect of a SE occurs only once the SE proceeding and any ex parte re-examination ordered therefrom has drawn to a close. There also is a steep fee for the procedure, but if big bucks are on the line, the fee is a relative pittance.

If used strategically, SE may provide a powerful tool for patent owners. Owners who discover information after a patent issues may benefit by submitting an SE request well before their patents become the subject of litigation. Counsel should evaluate the enforceability of valuable patent portfolios to determine whether a request for SE is an appropriate strategy.

Listen as our authoritative panel of patent attorneys examines in detail at least four Requests for Supplemental Examination filed and concluded. The panel will discuss the outcomes of completed requests, some of which were surprising, and explore how the patent owner was helped or hurt. The panel will also provide suggestions on the strategic use of supplemental examinations.

1. Requests for Supplemental Examination
   1. Types of information submitted to date
   2. Outcomes, including unexpected outcomes
2. Pros and cons of a Request for Supplemental Examination, e.g., does it achieve a Rohm & Haas purge; is it also useful to purge unclean hands? Has Lady MacBeth’s desire finally been fulfilled in U.S. patent law?
3. Suggestions on the strategic use of supplemental examination requests

The panel will review these and other critical issues:

• How should counsel balance the benefits and limitations of SE before filing a request?
• What are the burdens for patent owners considering a request for SE?
• What are the primary factors for deciding whether to use SE to consider, reconsider, or correct information relevant to a patent?